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Protection for cannabis-based IP in the wake of announcement of impending legalisation of medicinal cannabis
The legalisation of medicinal and recreational cannabis in several US states, Canada and some European countries has resulted in a new economic market rising from what was previously an illegal trade.
Meanwhile, in the UK, the recent cases of Billy Caldwell and Alfie Dingley have bolstered public support for the legalisation of medicinal cannabis, leading to a government review by the Advisory Council on the Misuse of Drug (ACMD) of the legality of cannabis-derived products for therapeutic uses.
The cannabis plant contains at least 85 cannabinoids. The most abundant of these, cannabidiol (CBD), is non-psychoactive and has been associated with a number therapeutic effects. THC is the second most abundant cannabinoid in cannabis, and is the primary psychoactive substance. Cannabis derived products contain varying amounts of CBD and THC.
The law on licences for the supply of a controlled substance for medical purposes is dependent on whether that substance is considered to have a proven medicinal effect. Currently, the UK follows the UN Convention on Narcotic Drugs, which classifies cannabis as a drug having “no medicinal benefit” (Schedule 1).
The result of the review was a recommendation from ACMD that cannabis and cannabinoids should not be placed in Schedule 1. The government has subsequently announced their intention to reclassify some cannabis products as Schedule 2, allowing these drugs to be prescribed, and therefore legally possessed by doctors and pharmacists.
Even under the current law there is no barrier to either the patenting of cannabis-related innovations or the trade-marking of cannabis-related brands; whilst Section 1(3) UK Patent Act (1977) (UKPA), in accordance with Article 53(a) European Patent Convention 1973 (EPC), prohibits the patenting of inventions, “the commercial exploitation of which would be contrary to public policy and morality”, Section 1(4) UKPA and Article 53(b) specify that this is not to be determined simply by whether the commercial exploitation of an invention is prohibited by law.
Nevertheless, it has rarely been seen as worthwhile to patent inventions related to cannabis use, since such patents could not be enforced. However, with the law set to change this no longer remains the case and companies should be ready to consider filing patent applications to secure protection for potentially valuable innovations before there is any public disclosure thereof.
Despite the current legal status of cannabis related products, the UK Intellectual Property Office has already granted a number of patents relating to the therapeutic use of cannabis-derived products.
For instance, GW Pharma have a number of UK patents relating to cannabis for medicinal use, including: GB2554592, claiming THC and CBD for use in the treatment of a glioma; GB2504263, claiming CBD for preventing brain injury in newborns and GB2495841, claiming CBD for the treatment of breast cancer. GW Pharma also have granted US and European (UK) patents relating to the cannabis-derived pharmaceutical, Epidiolex (e.g. EP3157512).
Besides new therapeutic uses for cannabis-derived products, patentable subject-matter relating to cannabis includes:
Plants – New strains of cannabis may be protected by Plant Breeders Rights. And whilst section 1(3)(f) of Schedule A2 UKPA prohibits the patenting of any variety of animal or plant or any essentially biological process for the production of animals or plants […]”, section 1(4) provides that inventions which concern plants or animals may be patentable if the technical feasibility of the invention is not confined to a particular plant or animal variety.
Detection and analysis – physical and chemical techniques for identifying and characterizing the various cannabinoid and terpenoid constituents present in cannabis;
Extraction and processing – methods of removing the desired compounds from cannabis and/or processing plants or extracts to achieve a desired chemical profile;
Compositions – essential oils, topical or cosmetic creams, and smoking or ingestible products;
Consumption devices – inhalers, nebulizers, applicators, or vaporizers;
Methods of treatment – methods of treating anorexia, epilepsy, and chronic pain; and
Other cannabis-related products – methods of cultivation and specialized agricultural implements.
Section 3(3) of the Trade Marks Act (1994), provides that a trade mark shall not be registered “if it is contrary to public policy or to accepted principles of morality”. Therefore, whether a cannabis-related sign will be registrable will be dependent on the exact nature of the sign. For instance, a sign which was perceived as referring to a genus of plants with particularly potent psychoactive effects was previously refused by the European Union Intellectual Property Office on the basis of the corresponding provision in the EU Trade Mark Regulation.
Nevertheless for those signs which are deemed acceptable, trade mark protection could become of enormous value. Once established, the cannabis industry will no doubt come under close scrutiny from the press and watchdogs, and companies will need to take careful measures to control the use of their cannabis product brand name.
In conclusion, it is important for companies to carefully evaluate all possible avenues for IP protection in this new field. Following legalisation of medical cannabis, the UK industry will be sure to move at a fast pace and it is essential that companies secure a competitive advantage.
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